TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.).

Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses

Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted defendant Sears’ summary judgment motion regarding the Lanham Act and related state law claims against it in this IP case involving the Bionic Wrench.

As to false advertising, the Court first examined defendants’

Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted defendant Sears’ summary judgment motion regarding the Lanham Act and related state law claims against it in this IP case involving the Bionic Wrench.

As to false advertising, the Court first examined defendants’

Med Script Pharm., LLC v. My Script, LLC, No. 14 C 469, Slip Op. (N.D. Ill. Dec. 11, 2014 (Gettleman, J.).

Judge Gettleman granted in part defendants’ various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff Med Script’s Lanham Act false advertising and other state law claims. Of particular note, the Court held

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims. 

As an initial matter, the parties’

Judge Holderman granted defendant Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) and 9(b) motion to dismiss plaintiff GL Trade’s false advertising, unfair competition and deceptive trade practices case alleging that TT misrepresented the scope of its patents. Initially, GL Trade’s Lanham Act false advertising and unfair competition claims were not preempted by patent law. The Federal Circuit held that Lanham Act unfair competition claims based upon marketplace statements were not preempted because the Lanham Act claim required a showing of bad faith. And the allegedly false patent markings were marketplace statements. As a matter of law, TT’s actions could not have been bad faith, although what constitutes bad faith in patent-related communications was “somewhat nebulous.” TT’s belief that the marked products read on the marked patents was legally plausible. GL Trade, therefore, could not have acted in bad faith. Similarly, it was legally plausible for TT to believe that it could mark covered products even when they were not being used in a patented way.

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Ashley Furniture Indus., Inc. v. Value City Furniture, Inc., No. 10 C 5413, Slip Op. (N.D. Ill. Aug. 31, 2010) (Shadur, Sen. J.).
Judge Shadur sua sponte ordered plaintiff Ashley Furniture to submit a brief memorandum citing the principal cases supporting Ashley Furniture’s trademark infringement claims based upon Value City Furniture’s “aggressive competitive advertising” including the use of Ashley Furniture’s trademark. The memorandum would help facilitate addressing the case at the Court’s initial status conference. The Court also noted that while the use of a competitor’s name in advertising was once verboten, it is now ubiquitous.

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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, Slip Op. (N.D. Ill. Mar. 4, 2008) (Darrah, J.).*
Judge Darrah granted in part and denied in part the parties’ cross-motions for summary judgment. Plaintiff and counter-defendant (collectively “NCI”) developed visual eye chart software that defendants and counter-plaintiffs (collective “M&S”) incorporated into their visual acuity system which was sold to ophthalmalic distributors and end users. For a period of time, the parties worked together, selling and servicing product and sharing office space. But eventually the relationship broke down and NCI began selling a competing system. The parties charged each other with various IP claims and related state law claims. Each of the IP-related claims is addressed below.
Copyright Infringement
The Court held that NCI was the sole owner of the copyright and that its principal Nordstrom was the sole author of the copyrighted software. M&S argued that its principal Marino contributed to the software. But the Court held that Nordstrom wrote the software and Marino only offered direction and ideas.
The Court granted M&S summary judgment for all copyrighted software sales during the terms of the parties’ agreements, but not as to sales outside of the agreement dates. And the Court granted summary judgment of non-infringement as to M&S’s new software package “Sports Vision Testing” (“SVT”). NCI argued that SVT was an infringing derivative work. But NSI failed to produce evidence or expert testimony refuting M&S’s evidence that it created its SVT software independent of NCI’s software using clean room procedures.
Digital Millennium Copyright Act (“DMCA”)
NCI alleged that M&S violated the DMCA by circumventing protections on a computer containing the software code in order to aid an NCI licensee of the code. Because the code was accessed to aid a licensee, NCI could not show that the password had been bypassed for the purpose of infringing NCI’s copyright. The Court, therefore, granted summary judgment for M&S.
The Court also denied summary judgment as to M&S’s claim that NCI violated the DMCA by accessing a portion of M&S’s computer system for which NCI lacked authorization and passwords. Summary judgment was not appropriate because the parties disputed whether NCI accessed the computers and whether the accessed material was copyrighted.
Lanham Act
The Court denied M&S summary judgment on NCI’s Lanham Act false advertising claim and its related state law claims. M&S argued that it had not made any statements likely to cause customer confusion. But NCI countered that M&S stated in advertising that it had used the same system for five years. NCI argued that the statement must be false because M&S switched to its new SVT software during that time. Because of these disputed facts, summary judgment was not appropriate.
Illinois Trade Secret Act
The parties agreed that prior to terminating their relationship, NCI took various information from M&S’s offices and computers. But the parties disagreed as to whether M&S took reasonable measures to protect the information’s confidentiality. The parties agreed that M&S password protected the information. But NCI argued passwords alone were not enough and suggested other protections that allegedly could and should have been employed. The Court held that password protection alone was not per se insufficient. But the Court required more information regarding M&S’s actions and the feasibility of alternative protections before it could rule on summary judgment.

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